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Bar raised (almost) for patent applicants

Our News Alert of 24 June 2011 noted that the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 [2012] had been introduced to the Australian Parliament.

Notwithstanding recent turmoil in the Government, the Raising the Bar Bill has now been passed without amendment by the Senate. It has been read for a first time in the House of Representatives, where it is also likely to pass unamended. The Bill is therefore likely to receive the Royal Assent of the Governor General and become law within the next few weeks.

The full effect of the Bill will likely not be felt until March 2013, since most of the provisions of the Bill will not commence until 12 months after the date of Royal Assent. However, applicants who file priority applications (e.g. Australian provisional applications, or first foreign filings) after the date of the Royal Assent may have a choice as to whether a subsequent Australian application will be subject to the current or amended Patents Act.

The most important portion of the Bill for patent applicants is Schedule 1, which establishes a higher standard for assessment of inventive and innovative step, a new 'utility' requirement for 'a specific, substantial and credible use' for a claimed invention, and more stringent requirements for the scope and detail of disclosure required to support patent claims. Also, the standard of disclosure required for provisional specifications is elevated to equivalence with that required for complete applications. Finally, the unloved ‘modified examination’ is to be abolished, as is ‘deferral’ of examination.

For applicants with unexamined applications, we recommend a request for examination be filed before the commencement date to gain the benefit of the current standards.

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